Ex Parte Meiri et alDownload PDFPatent Trial and Appeal BoardSep 26, 201311325078 (P.T.A.B. Sep. 26, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARKOFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 11/325,078 01/03/2006 David Meiri EMS-114US3 4946 52427 7590 09/27/2013 MUIRHEAD AND SATURNELLI, LLC 200 FRIBERG PARKWAY, SUITE 1001 WESTBOROUGH, MA 01581 EXAMINER MACKALL, LARRY T ART UNIT PAPER NUMBER 2189 MAIL DATE DELIVERY MODE 09/27/2013 PAPER Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE _____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD _____________ Ex parte DAVID MEIRI and MAGNUS BJORNSSON ____________________ Appeal 2011-000594 Application 11/325,078 Technology Center 2100 ____________________ Before ELENI MANTIS MERCADER, DAVID M. KOHUT, and TREVOR M. JEFFERSON, Administrative Patent Judges. JEFFERSON, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-000594 Application 11/325,078 2 STATEMENT OF CASE1 Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1- 22.2 We have jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part. Introduction The claims are directed to continuous backup by “selectively maintaining and modifying portions of data stored on a computer storage device and corresponding to particular points in time.” Spec. 1:4-6. Claim 1, reproduced below with disputed limitations in italics, is illustrative of the claimed subject matter: 1. A method of providing continuous backup of a local storage device, comprising: subdividing the local storage device into subsections; providing a time indicator that is modified periodically; in response to a first request to write a first set of new data to a particular subsection of the local storage device at a first particular value indicated by the time indicator, copying data from a corresponding subsection of the local storage device to a first portion of an other storage area different from the local storage device; and in response to a second request to write a second set of new data to the particular subsection of the local storage device at a second particular value indicated by the time indicator that is different from the first particular value, writing the second set of new data to a second portion of the other storage area separate from the first portion to preserve the first set of new data. 1 Throughout the decision, we refer to the Appellants’ Appeal Brief (“App. Br.,” filed Jun. 1, 2010), and Reply Brief (“Reply Br.,” filed Sep. 23, 2010), and the Examiner’s Answer (“Ans.,” mailed Jul. 19, 2010). 2 The Real Party in Interest is EMC Corporation. Appeal 2011-000594 Application 11/325,078 3 References The prior art relied upon by the Examiner in rejecting the claims on appeal is: Coombs US 7,165,154 B2 Jan. 16, 2007 Vishlitzky US 2003/0195887 A1 (filed Mar. 18, 2003) Oct. 16, 2003 Rejections The Examiner made the following rejections: Claims 1-9, 11-19, 21, and 22 stand rejected under 35 U.S.C. § 102(b) as being anticipated by Vishlitzky. Ans. 6-9. Claims 10 and 20 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Vishlitzky and Coombs. Ans. 10. Claims 1-8, 10-18, and 20 are provisionally rejected on the judicially created doctrine of obviousness-type double patenting as being unpatentable over claims 1-8, 10-18, and 20 of copending Application No. 11/324766 and copending Application No. 11/324747. Ans. 4. Claims 9 and 19 provisionally rejected on the judicially created doctrine of obviousness-type double patenting as being unpatentable over claims 9 and 19 of copending Application No. 11/324747 and Vishlitzky and Application No. 11/324766 in view of Vishlitzky. Ans. 4-5. OPINION 35 U.S.C. § 102(b) Issue: Did the Examiner err in finding that Vishlitzky discloses, in response to a second request to write a second set of new data to the particular subsection of the local storage device at a second particular value indicated by the time indicator that is different from the first particular value, writing the second set Appeal 2011-000594 Application 11/325,078 4 of new data to a second portion of the other storage area separate from the first portion to preserve the first set of new data as recited in claim 1? Appellants contend that Vishlitzky fails to disclose that, in response to a second request to write a second set of new data to the particular subsection of the local storage device (to which a first set of data has already been written), the second set of new data is written to another location to preserve the first set of new data as required in claim 1. App. Br. 11. Instead, Appellants argue that Vishlitzky only teaches over-writing of the first data by the second data, as the reference describes only the first write and not the second write receives special treatment. Id.; see Vishlitzky ¶¶ [0106], [0116]. Appellants assert that Vishlitzky fails to disclose that a second (or subsequent) virtual device is established such that the first set of new data is preserved prior to writing the second set of new data. App. Br. 12. Even if the second virtual device is established, Appellants argue that it is the original data from the first write that is stored in the second storage area, while data from the second write is stored on the logical storage device. App. Br. 13. The Examiner finds that Vishlitzky teaches that in response to a second request to write a second set of new data to a particular section of a storage device that already contains written data, the first set of new data is copied to another location to avoid overwriting the first set of new data with the second set. Ans. 11-13 (citing ¶¶ [0071], [0072], [0076] and Fig. 2). Since Vishlitzky discloses that the virtual device may represent point in time copies of the logical device, the Examiner argues that the multiple virtual devices corresponding to the standard logical device may contain multiple snapshots in time of a standard device. Ans. 14. The Examiner finds that Appeal 2011-000594 Application 11/325,078 5 when Vishlitzky establishes a third virtual device and receives a third request to write data, the second data is stored in the other storage area. Ans. 15. In Vishlitzky, the Examiner finds, the second set of new data is stored in the other storage area as claimed after the third write request is executed. Ans. 15. We disagree with the Examiner’s findings (Ans. 11-15) that Vishlitzky discloses that in response to a second request to write a second set of new data the second set of new data is written to the other storage area. As the Examiner states, in Vishlitzky, only “some time after the second write” request the data is written to the “other storage device.” Ans. 15. For a prior art reference to serve as an anticipatory reference, it must disclose every limitation of the claimed invention, either explicitly or inherently. See In re Schreiber, 128 F.3d 1473, 1477(Fed. Cir. 1997). Although, the Examiner correctly found that Appellants claim do not require that the “first set of new data” in the claim remain on the first storage device (Ans. 15), the Examiner has not shown that Vishlitzky explicitly or inherently discloses “in response to [a] second write request” that the second new data is written to the other storage area (Ans. 6-7; 15-16). The Examiner’s only reference to Vishlitzky discusses the possibility of a sequence of commands (Ans. 13), but does not show that Vishlitzky discloses that “in response to a second write request,” as per claim 1, the commands occur to create a third write request and third virtual device such that the “second set of new data” is then stored in the other storage area. Based on the foregoing, the Examiner erred in finding that Vishlitzky discloses that, Appeal 2011-000594 Application 11/325,078 6 in response to a second request to write a second set of new data to the particular subsection of the local storage device . . . , writing the second set of new data to a second portion of the other storage area separate from the first portion to preserve the first set of new data as recited in independent claim 1. The claim limitation of claim 1 appears in independent claim 11 and dependent claims 2-9, 12-19, 21, and 22. Accordingly, we do not sustain the Examiner’s rejection of claims 1-9, 11- 19, 21, and 22 under 35 U.S.C §102(b) as being anticipated by Vishlitzky. 35 U.S.C. § 103(a) The Examiner’s rejection of dependent claims 10 and 20 rely on the rejection of independent claims 1 and 11. Appellants’ arguments that the Examiner erred rely on the arguments presented for claim 1. App. Br. 15- 16. Based on the foregoing, we do not sustain the Examiner’s rejection of claims 10 and 20 under 35 U.S.C §103(a). Obviousness-Type Double Patenting With respect to obviousness-type double patenting rejections for claims 1-20, Appellants do not provide any arguments in the primary Appeal Brief. Instead, Appellants propose deferring review of the Examiner’s obviousness-type double patenting rejections for the first time in Appellants’ Reply Brief. Reply Br. 2. Appellants’ arguments first presented in the Reply Brief are untimely. See Ex parte Borden, 93 USPQ2d 1473, 1474-77 (BPAI 2010) (informative). Since Appellants have not addressed the obviousness-type double patenting, we sustain the Examiner’s provisional rejections of claims 1-8, 10-18, and 20 and claims 9 and 19. We note that the Examiner’s Answer Appeal 2011-000594 Application 11/325,078 7 (Ans. 3-5) and Final Rejection (Dec. 31, 2009, pages 2-4) omit dependent claims 21 and 22, which depend from claims subject to the Examiner’s obviousness-type double patenting rejection.3 CONCLUSIONS OF LAW The Examiner erred in finding that Vishlitzky discloses that, in response to a second request to write a second set of new data to the particular subsection of the local storage device . . . , writing the second set of new data to a second portion of the other storage area separate from the first portion to preserve the first set of new data as recited in the independent claim 1. DECISION For the above reasons, the Examiner’s rejection of: (a) claims 1-9, 11-19, 21, and 22 under 35 U.S.C. §102(b) is REVERSED; and (b) claims 10 and 20 under 35 U.S.C. §103(a) is REVERSED. The Examiner’s provisional rejections of claims 1-20 under the judicially created prohibition of obviousness-type double patenting is AFFIRMED. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2011). 3 Should there be further prosecution, the Examiner’s attention is directed to the double patenting rejection for claims 21 and 22 and to the Interim Examination Instructions for Evaluating Subject Matter Eligibility Under 35 U.S.C. § 101, Aug. 2009, at 2, available at http:// www.uspto.gov/web/offices/pac/dapp/opla/2009-08-25_interim_101_ instructions.pdf (providing a computer program per se as an example of a claim not directed to one of the four patent-eligible subject matter categories). Appeal 2011-000594 Application 11/325,078 8 AFFIRMED-IN-PART tj Copy with citationCopy as parenthetical citation